Part of the fun of drinking cocktails is tapping into a history and a culture of a particular time. This is a discussion of drinks, spirits, bartending, and history for beginners and professionals alike.
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Saturday, 11 May 2013

The Abbott's Bitters Debate

I'm going to preface this post with a statement of respect for both of the parties involved in this issue. Darcy O'Neil has a lot of intriguing information on his site and I loved his "Science of Taste" presentation I saw at Art of the Cocktail so much that I asked for permission to share some of it on my site. He also wrote a fascinating book on the history of soda called "Fix The Pumps," which you can order from his site. I also love Tempus Fugit products, which are sadly unavailable in Canada, but thanks to a couple Seattle trips I have their creme de violette and amazing Gran Classico on my liquor shelf at home. The purpose of this post is only to discuss how interesting this dispute is, what it might become, and to set up further discussion on the topic of trademarking in the cocktail world.

Let me also say that I am not a lawyer nor a trademark agent. I have some trademark knowledge, and was coincidentally already doing further research on the topic for a future article on the Sazerac mark and its ownership by the Buffalo Trace Distillery (I won't get into that now). My intention is only to discuss this dispute objectively because I think it's fascinating. Also, I've noticed some comments on this topic mentioning copyrights and patents - these are not the same as trademarks. The issue of Abbott's Bitters is trademark related, and has nothing to do with a copyright or a patent.

I want to be thorough, so this is going to be detailed. If you just want to know the basic case on either side, skip to the end. Definitions, history, and references are in the body of this post.

There is a type of aromatic bitters called "Abbott's" that, while unknown today, were very popular around the turn of the 20th century. These were said to have been the bitters of choice for the original Manhattan Cocktail before declining in popularity and eventually disappearing. This of course makes them extremely desirable to cocktail nerds everywhere. Vintage bottles popped up for ridiculous prices online, and thanks to Robert Hess, a mass spectrometry was even performed on an old bottle to help determine its ingredients. Here's where Darcy O'Neil steps in. Being a chemist by trade, O'Neil took one look at the mass spec and saw immediate flaws in the results. He decided to pursue the creation of authentic Abbott's Bitters by doing extensive research on their history, ingredients, and chemistry. It is naive to assume that other cocktail nerds weren't either interested in or already developing the same product, and that's exactly what happened.

Tempus Fugit is a spirit and liqueur company based in California that distributed absinthes before branching out into other products. They manufacture some high-quality liqueurs as well as some bitters, including Gran Classico (which is similar to Campari). They have the intention and the means to develop, manufacture, and sell a version of Abbott's Bitters, as they own both the trademark to the use of the name as well as a design mark for the original label. The dispute here is that O'Neil, regardless of whatever work he's done with his bitters, plans to sell a product using the name "Abbott's Bitters," which is a registered trademark belonging to Tempus Fugit.

Not surprisingly, Tempus Fugit sent O'Neil a letter politely informing him that they own the trademark to the name. You can see both the letter and O'Neil's response on his post here.

I would like to clarify some concepts and definitions to the best of my understanding, particularly with the Supplemental Register as there seems to be some confusion. Let's quickly look at trademarks before getting into this:

Trademarks are given to names, descriptions, taglines, phrases, or any recognizable combination of words, as well as logos, designs, fonts, and any recognizable visual media (incidentally, also sounds - like the MGM lion roar). For example, Coca Cola the name is a registered trademark as is the font and design in which it appears on the can/bottle. Another example is the phrase "it gives you wings," which is owned by Red Bull. Trademarks protect particular wares/goods (so, for Abbott's - 'alcoholic bitters') and services (like "restaraunt services") . So for example, "it gives you wings"... if a third party attempted to file for a similar ware, like 'fruit juices', it would be rejected for being confusing to customers. However, if it was used for raincoats, there's a possibility you could get that trademark for clothing wares. (I haven't looked up Red Bull's trademarks to confirm, I'm just trying to make an example). The United States has two Trademark registers:

Principal Register: essentially, a mark on this list means that it is inherently distinctive, its marks are eligible for distinctiveness, has evidence of use, and is incontestible.

(A note on terms here, distinctive means that it is distinct in the market, so if you look at the beer aisle, consumers will recognize Stella Artois, or if you walk into the pop aisle consumers will recognize Coca Cola. Or, as Darcy mentions in his post, if I say Angostura, you say bitters. If I say Levi's, you say jeans. Marks refer to trademarkable images, phrases, names, etc. Use (i.e. intent to use) refers to the product existing in the market by means of it being physically sold to consumers. This is important here, because taking pre-orders or discussing the product may not count as use.)

Supplemental Register: A trademark on this register is still a registered trademark. It will still bar any future applications for the same trademark. Here's where things are a little interesting, however: "A mark on the supplemental register can never achieve incontestability. As such, should a third party be able to show earlier use of a confusingly similar mark, it can move to cancel a registration..." This means one can contest the ownership of a trademark on this Register.
Having said that, there are benefits from registration on the Supplemental Register:
- it is a secondary option for registering marks that have the potential to be distinctive
- it serves as a bar to registrations of confusingly similar marks
- it gives priority rights to registering a mark in other countries
- it is a means of protecting a mark while disctinctiveness is acquired

Another important note here: The Trademark Office does not require a mark to be on the Supplemental Register for five years before it can be considered for the Principal Register. A company can apply for registration on the Principal Register again at any time, and if it only takes say one year to acquire distintinctiveness, then they could be on the Principle Register in one year.

O'Neil does give links to the trademark records on his post (these are available to the public). It should be noted that there is nothing "shaky" about Tempus Fugit's registration. There is one reason why the "Abbott's Bitters" mark ended up on the Supplemental Register: it's a surname - a generic one at that. It is a rule that any generic surname can not gain registration on the Principal Register unless or until it achieves distinctiveness. So, it automatically ends up on the Supplemental Register until this distinctiveness is acquired. (Keep in mind there is a brand of Abbot's beer and Abbot's wine, separate parties currently in use of the name, albeit with only one "T.") The Supplemental Register most certainly does "provide evidence of trademark rights," it just isn't incontestable.

The only other issue here, which is of less concern, is the image/logo. Tempus Fugit owns the rights. It's as simple as that, there's no argument here. It WAS public domain, and they were granted the trademark for its use, which means it's not public domain anymore. If it was wrong or impossible to get a trademark for something that's public domain, it would not have been granted to them.

Let's look at this from Tempus Fugit's point of view:
- they own trademark registration on the Supplemental Register for the name "Abbott's Bitters" dating back to the date of application (not when it was granted) in 2009
- they have intent to use, as they claim to be developing the product or already have a completed product
- they own the trademark rights to the use of the logo on the Principal Register, which is incontestable
- they have already paid an attorney to handle the trademark registrations, which means that a professional has already viewed the case from every angle and given them the best possible protection. In other words, they've handled this from a business perspective and invested in their product
- their applications aren't "weak," in fact they're strong - otherwise they would not have been granted registration
- they are policing their trademark, as is required to maintain distinction (which just means ensuring nobody else is using the name)
- they have filed for registration in Canada
- they have no transferral of product as it's not for sale yet

Now let's look at this from O'Neil's point of view:
- he has no trademark rights on either register for the name nor the logo
- he has intention of use, public discussion of his intent (albeit in a niche market), and pre-orders for the product itself. These are very low levels of use because there is no transferral of product, but may count for something. Although, there has also been discussion of Tempus Fugit's product.
- he wants to prove that Tempus Fugit's mark registration is "shaky" because "Abbott's" is an old and known brand-name. Proof of this would include that it's already available at stores or on menus at cocktail bars, for example. He would have to prove that Abbott's is a generic term in a consumer's mind, and is well-known in the marketplace.
- to contest the name mark, he would have to prove some sort of significant use prior to 2009 when Tempus Fugit applied for registration
- he has not acquired legal council of any kind yet, which is going to cost a lot of money (likely tens of thousands of dollars)
- if he wants to acquire the trademark for himself, he will face the same problems Tempus Fugit did, and his mark will be just as vulnerable. He would still have to apply for the trademark after going through the process of proving that Tempus Fugit shouldn't own it

I encourage everyone not to react negatively towards either party here. Tempus Fugit has done nothing wrong - they wanted to make Abbott's Bitters and they secured the trademark rights to do so, which is what any business would and should do. O'Neil should be commended for his extensive research on the subject and I truly hope I get to have a bottle of his bitters regardless of what they're called. The reality is that he viewed this project as research and not as business and unfortunately once the exchange of money enters the picture, it's a business issue. In a perfect world I would love to see both parties work together to develop an Abbott's Bitters. They could pool their information and research, and O'Neil could bring everything he knows to Tempus Fugit, who likely have much larger and more efficient production means. I also hope that this doesn't become a lengthy dispute sparking uninformed rants in the online community. If you do want to weigh in, I suggest looking over the documentation, all of which is available to the public. At the least, it's an interesting discussion and will bring more attention to trademarking in the bartending world, of which most people are probably unaware.

6 comments:

I have to disagree with the right to trademark a public domain image. The trademark examiner does not go through every possible image to determine whether it is worthy of a trademark, that is the courts job. It is a fact that things in the public domain cannot be claimed by individuals simply by applying for a trademark.

And Tempus Fugit is attempting to register the Abbott's trademark in Canada after I began promoting the product (April 25, 2013).

- Whether you or anyone disagrees with the right to trademark a public domain image is inconsequential. Registration was granted and that's that. It should be noted too that the copyright for an image can be public domain, but a copyright is not a trademark. This means that you could use the image any way you please unless you're profiting from it, which would infringe on the trademark.

- The trademark Examiner actually DOES go through every possible image to determine whether it is worthy of a trademark. That's actually kind of his/her job. Also it should be noted that there is no "court" when it comes to trademarks. The Examining Attorney acts on behalf of the USPTO and prosecutes the application. So if anyone says "court," they need to know that this would be a figurative term, as trademark law - among other kinds - doesn't operate like the better known kinds of law (like criminal). The "court" would just be the Examining Attorney, who in this case already granted trademark registration to Tempus Fugit.

- It's not a fact that public domain media can't be trademarked. See my above point. The confusing part here is that images can have both a copyright and a trademark. A popular example of this is the Popeye image/design (I think someone actually mentioned this on your post's comments section). An important thing people need to remember here is that the trademark was granted. This means the Examining Attorney, acting on behalf of the USPTO, decided that Tempus Fugit CAN own the trademark and therefore sole use of the image with complete incontestability. Like I said in my post here, the image is a done deal. There is no controversy and there is no opposing argument. You (or whoever) can dislike it, but you can't contest it.

- It's true they filed their application in Canada after you started your promotion, but they're claiming use and registration in the U.S. as a filing basis. Being on the Supplemental Register grants priority rights in other countries, but nonetheless they own registration rights and intent of use in the U.S. and these are very solid grounds to achieve registration in another country.

There's really not much you can contest, and if you do it's likely going to take a very long time and therefore an insane amount of money. I personally would rather see that money go into getting your bitters out there (particularly into my bar here in Vancouver) or developing a new product or writing a new book or what have you. This situation sucks, but I don't think Tempus Fugit deserves condemnation and I really hope that you guys find an amiable solution. I also hope that we in the bartending and online communities focus on the important thing and that is that both of you developed what I'm sure are fantastic products that we should all use and enjoy.

My point was that the USPTO does not look at the legal implications of registered trademarks, they merely look at whether they conflict will current or known marks. The Courts (federal, etc.) will handle the disputes.

One of the issues is "Enclosure" and whether rights end and what happens when they end.

Also, Bob's Abbott's Bitters was being sold 3 years ago.

And they won't likely get a trademark for Abbott's in Canada, as the trademark office is very stict about surnames that don't have genuine secondary meaning (i.e Tim Horton's). Considering Tempus Fugit hasn't sold a single bottle, there is no secondary meaning.

An applied-for mark is checked against every mark in the entire USPTO database (it's most important with registered trademarks because these are already incontestable). This will include pending, registered, and expunged marks. As for the "courts," I will again mention that any trademark disputes are handled by the Trademark Trial and Appeal Board (TTAB) [in Canada it's called The Opposition Board], which is a part of the USPTO.

If Bob's Abbott's Bitters had any kind of trademark rights, that would have been a bar to Tempus Fugit's trademark application. Had they had any claim to that name, it would have been cited against TF's application and refused on that basis. So if your point is that it's a known product because it was already out in the market, it doesn't matter because TF's application was granted. Also, we can't forget that TF has had the filing since 2009 (it counts from the date of application).

Certainly it's impossible to predict the outcome, however, a registration in another country is extremely persuasive to an examiner. Regardless, they can draw out their application for a long time until they acquire distinctiveness, further helping their application.

As for Moby Dick, let's be clear here: that's a copyright issue and NOT a trademark one. In fact, you can even look up goods in the identification of goods and services manual and you won't find fiction books in there because they're a creative work (just like film, music, etc). So I don't see the parallel. You could, however, trademark Moby Dick the beer, or Moby Dick the Pool Cleaning Service, and so on.

Images are an interesting topic because they can have both a copyright and a trademark (you can put an image on a bottle, but you can't put a film on a bottle). So the 20th Century Fox case you sent me isn't really relevant. A much more relevant example would be Popeye, which has both a copyright that's public domain and a privately owned trademark.

To anyone who is interested, I highly recommend taking a look at the Trademark Manual of Examining Procedure for the US http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Apr2013/d1e2.xmlAnd/or the Trade-Marks Guide for Canadahttp://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html

I really had no intention of taking sides on this topic. I just wanted to get a collection of accurate information out there because of both the factual errors in your original post and the number of uninformed comments floating around on the internet concerning this issue. As far as I can tell, your best chance of success is proving use prior to 2009. If you do decide to pursue this, I do hope you get proper legal council in the form of a trademark agent.

If these legal battles prevent the sale of O'Neil's product, then I do wish he would concoct an alternate name and just get it on the market. How about "Joseph and Cornelius Abbott's Victorian Bitters"? But really, anything would do. We'll all know what it really is.